Seagate relied on outside counsel for opinions on patents and relied on the advice of counsel defense to rebut charges of willful infringement. The District Court held that this amounted to a waiver of privilege with any counsel, including trial counsel. The CAFC reversed, stating: "[Asserting the advice of counsel defense and disclosing opinions of opinion counsel do not constitute ] waiver of the attorney-client privilege for communications with trial counsel. We do not purport to set out an absolute rule. Instead, trial courts remain free to exercise their discretion in unique circumstances to extend waiver to trial counsel, such as if a party or counsel engages in chicanery."
It is not a bright-line rule that waiver is cut-off as to trial counsel if separate counsel wrote the opinion that is relied upon; such a rule could lead to negative consequences, for example, causing opinions to be converted into insurance-type documents, rather than business documents. Opinion counsel should serve to provide an objective assessment for making informed business decisions, while trial counsel focuses on litigation strategy and evaluates the most successful manner of presenting a case to a judicial decision maker. Fairness counsels against disclosing trial counsel's communications on an entire subject matter in response to an accused infringer's reliance on opinion counsel's opinion to refute a willfulness allegation. However, questions regarding in-house counsel still linger.
In Osram v. Nillsen, (CAFC 2008), Osram argued that Nilssen waived attorney-client privilege without proper notice because Nilssen relied on his tax counsel in determining that his company was eligible to pay small entity maintenance fees on the patents at issue, and Nilssen waited until the trial to make this claim. The District Court agreed with Osram, and the CAFC affirmed there was waiver and used it as a factor in determining inequitable conduct and, ultimately, that the case was 'exceptional'. While the waiver ruling was not central to the case, it did mesh with the ruling in Seagate.
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